WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ivenue.com v Jeffrey Russell
Case No. D2000-1251
1. The Parties
The Complainant is ivenue.com, a California corporation with its principal place of business at 3660 Wilshire Boulevard, Fourth Floor, Los Angeles, California 90010, USA.
The Respondent is Jeffrey Russell, an individual with a residence at 5916 N Las Virgenes, Number 668, Calabasas, California 91302, USA.
2. The Domain Name and Registrar
The dispute concerns the following domain names: ivenue.org, inetbanet, and inetba.org, hereinafter the Domain Names. The Registrar with which these Domain Names are registered is Network Solutions, Inc. with a business address in Herndon, Virginia, U.S.A.
3. Procedural History
On September 21, 2000 and September 25, 2000, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) received a Complaint electronically and by hard copy to for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
On September 25, 2000 the WIPO Center acknowledged receipt of the said Complaint.
On September 25, 2000 the WIPO Center sent a Request for Registrar Verification to the Registrar. On September 29, 2000 the Registrar confirmed to the WIPO Center that it was the Registrar of the said Domain Names and also that the current registrant of the said Domain Names was the Respondent.
On October 3, 2000 having found that the Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as October 3, 2000 and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the last date, i.e. October 22, 2000. On October 25, 2000 the WIPO Center sent the Notification of Respondent Default to the Respondent by e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On November 27, 2000 the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant (collectively including IVENUEís related company NOS) has established, through use, rights in the trade names and service marks IVENUE AND INETBA in the United States as well as internationally. The Complainant asserts as dates of first use for IVENUE, at least as early as December 1998; and for INETBA, at least as early as December 1, 1999. These dates are set forth in pending applications for registrations, filed in the United States Patent and Trademark Office, as follows:
IVENUE - Appl. No. 76/081,192 in International Class 42 for "computer network web page design and implementation for others; web page hosting services; and electronic mail services."
INETBA - Appl. No. 75/916,618 in International Class 35 for "providing a full range of administrative and business support services to others through the global computer network and by telephone" and International Class 42 for "computer network web page design and implementation for others; web page hosting services; and electronic mail services."
Complainant is the owner of registrations for the domain names ivenue.com, ivenue.net, and inetba.com. The trade names and service marks IVENUE and INETBA are coined terms created by Complainant. Complainantís names and marks IVENUE and INETBA have no meaning in the English language.
Complainant operates a web site at the ivenue.com domain name address offering for sale and selling its services using its name and mark IVENUE. Complainant advertises and sells computer network web page design, web page hosting services and electronic mail services under the name and mark IVENUE. A copy of the home page of the IVENUE web site found at Complainantís ivenue.com domain name, printed on September 21, 2000 is shown in Exhibit 3 to the Complaint. An affiliated company of Complainant (the two companies share ownership interests in common), NOS Communications, Inc. ("NOS"), operates a web site at the inetba.com domain name address offering for sale and selling its services using the name and mark INETBA. Complainantís affiliated company NOS advertises and sells computer network web page design, web page hosting services; and electronic mail services under the name and mark INETBA. A copy of the home page of the INETBA web site found at Complainantís inetba.com domain name, printed on September 21, 2000, is shown in Exhibit 4 to the Complaint.
Complainant registered the domain name ivenue.com with Network Solutions, Inc. on August 2, 2000 and registered the domain name ivenue.net with Network Solutions, Inc. on August 2, 2000.
Complainant registered the domain name inetba.com with network Solutions Inc. on October 6, 1999.
The relationship between Complainant and its affiliated company NOS is not a matter of public record. No reference is made to INETBA at the web site found at the ivenue.com domain name, and no reference to IVENUE is found at the inetba.com web site. The services rendered by Complainant and its affiliated company NOS under the names and marks IVENUE and INETBA are not advertised together, marketed together, or otherwise promoted together. Ostensibly, the only way in which a person unaffiliated with Complainant and its affiliated company NOS could learn of the relationship between the businesses transacted under the wholly unrelated names and marks IVENUE and INETBA would be to query by means of a WHOIS domain name search in the company name of Complainant, ivenue.com.
Subsequent to the first adoption and use by Complainant and its affiliated company NOS (hereinafter Complainant and NOS shall be collectively identified as "Complainant") of the names and marks IVENUE and INETBA, Respondent registered the domain names ivenue.org,inetba.net, and inetba.org (the "Disputed Domain Names"). The Disputed Domain Names registrations owned by Respondent are identical to Complainantís IVENUE and INETBA service marks and long used trade names. The disputed domain names are identical to Complainantís names and marks save for the addition of the gTLDs ".org" and ".net."
It is averred by Complainant, that, upon information and belief, the Disputed Domain Names were registered by Respondent after he was contacted by telephone by Complainantís sales agents soliciting Respondent to sell Complainantís web hosting services rendered under its name and mark IVENUE. Upon information and belief, after being contacted by Complainant and with knowledge of Complainantís rights in the names and marks IVENUE and INETBA, Respondent registered multiple domain names incorporating Complainantís names and marks. To wit, Respondent registered every possible manifestation of a domain name incorporating Complainantís names and marks IVENUE and INETBA other than the said Domain Name registrations for ivenue.com, ivenue.net and inetba.com owned by Complainant.
Respondent has made no use of the Disputed Domain Names since their registration seven months ago. Each of Respondentís Disputed Domain Name registrations have been "parked" without any charge to Respondent by a company unrelated to Respondent named Lightrealm, Inc. at a web site named "Domain Valet." Copies of the home pages of the web sites pointed to by the Disputed Domain Names ivenue.org, inetba.net, and inetba.org, printed on September 21, 2000 are illustrated in Exhibit 5 of the Complaint.
Complainant contacted Respondent with a cease and desist letter dated July 12, 2000 demanding, inter alia, that Respondent (i) cease and desist from any and all existing or planned use, including any use in connection with a domain name, website, search engine description, URL and/or metatag, of Complainantís names and marks IVENUE and INETBA, and (ii) transfer of the ownership of the registrations for the Disputed Domain Names ivenue.org,inetba.net and inetba.org to Complainant. The letter was forwarded to Respondent by both Federal Express service as well as by U.S. Postal Service Certified Mail, Return Receipt Requested. A copy of the cease and desist letter received by Respondent, together with the Return Receipt acknowledging receipt at Respondentís address, is shown in Exhibit 6 to the Complaint. It is averred by Complainant that Respondent did not reply in any manner whatsoever to the cease and desist letter received from Complainant.
The Complainant avers that upon information and belief, the Registrant (as an individual, business, or other organization) has not been commonly known by the Disputed Domain Name. Registrant owned no telephone listings for the names comprised by the Disputed Domain Names registrations.
Respondent has no apparent rights or legitimate interests in the contested domain names. There exists no relationship between Complainant and Respondent that would give rise to any license, permission or other right by which the Respondent could own any domain name incorporating the Complainantís names and marks IVENUE and INETBA.
5. Partiesí Contentions
Essentially, the contentions of the Complainant are as follows:
IVENUE and INETBA, are its service marks, and that Respondent has adopted substantially identical words for the said Disputed Domain Names that are confusingly similar to Complainantís service marks and Domain Names, that the Respondent has no rights or legitimate interests in the said Disputed Domain Names and that the said Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondentís Default
By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:
"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain nameÖ"
In the event of a default, under paragraph (14)(b) of the Rules:
"Öthe Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques WIPO Case No. D2000-0004 (February 16, 2000):-
"Respondentís failure to present any such evidence or to deny complainantís allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondentís default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondentís Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
ii) the Respondentís Domain Name has been registered and is being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
"Öthe complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the IVENUE and INETBA marks. It has also shown substantial use. Ownership of these marks is clearly in the Complaint. Under the Policy, all that is required of the Complainant is to establish its rights in the marks, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Names with the Complainantís IVENUE and INETBA marks and finds that the second level domains thereof are substantially identical to the Complainantís marks. The Panel finds that there is such similarity in sound, appearance, and connotation between the IVENUE and INETBA marks and the said Disputed Domain Names as to render said Disputed Domain Names confusingly similar to Complainantís IVENUE and INETBA marks.
6.4 Respondentís Rights or Legitimate Interests in the Disputed Domain Names
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Names by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Names or a name corresponding to the said Disputed Domain Names in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the said Disputed Domain Names, even if he has acquired no trademark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondent in demonstrating any of the foregoing factors because Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Names by Respondent. Neither is there any evidence for any of the other two foregoing requirements.
Furthermore, in the absence of any license or permission from Complainant to use its names and marks IVENUE and INETBA or to apply for or use any domain name incorporating those marks, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain names could be claimed by Respondent. Guerlain S.A. v. Peikang, D2000-0055 (WIPO).
The contested domain names ivenue.org, inetba.net and inetba.org do not resolve to active sites; accordingly, confused customers of the Complainant are likely to be frustrated in their efforts to reach the Complainantís web sites. Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. Indeed, Respondent has not undertaken a bona fide offering for sale of goods using the disputed domain names before notice of the dispute, and cannot establish rights or legitimate interests in the Disputed Domain Names, thereby establishing the second element necessary for Complainant to prevail on its claim that Respondent has engaged in abusive domain name registration. The Frozfruit Company v. Maui Bound Media Group, D2000-0851 (WIPO).
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001 (January 14, 2000) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish Ďbad faithí on the part of the Respondent.
Complainant has averred that upon information and belief the Disputed Domain Names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registrations to the Complainant, the owner of the IVENUE and INETBA service marks for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the Disputed Domain Names. Circumstances indicating this to be the case include the fact that Respondent sought and obtained the registrations of the Disputed Domain Names,ivenue.org, inetba.net and inetba.org, after being solicited, upon information and belief, by agents of Complainant seeking to sell to Respondent Complainantsí services rendered under the IVENUE and INETBA service marks. Furthermore, Respondent has obtained registrations for two separate terms altogether: the only link between the terms IVENUE and INETBA are that they are both coined terms created by Complainant, which terms are used by Complainant exclusively as trade names and service marks in connection with its services. Still further, Respondent registered multiple domain names all of which are identical to Complainantís names and marks IVENUE and INETBA. "The registration of several names corresponding to Complainantís trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith with the meaning of paragraph 4(b)(ii) of the Policy." General Electric Company v. Normina Ansalt a/k/s Igor Fyordorov, WIPO Case No. D2000-0452.
Respondent registered multiple domain names here at issue all identical to names and marks belonging to Complainant. This course of conduct is further evidence of Respondentís bad faith intent and effort to capitalize in some way on Complainantís goodwill. The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664 ("the selection of three domain names that are virtually identical to complainantís famous mark demonstrates that these were abusive registrations contrary to the Policy").
Before any notice to the Registrant of this dispute, there has been absolutely no evidence of the Registrantís use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services. Such inaction, in view of the facts and circumstances of this case, further constitutes evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marhsmallows, WIPO Case No. D2000-0003.
Based on the alleged facts, which have not been disputed, the Panel finds that the Respondent has engaged in the practices defined in Paragraph 4(b)(ii) of the Policy as evidencing the registration and use of the said Disputed Domain Names in bad faith.
For all the foregoing reasons and pursuant to the ICANN Rules, paragraph (15), the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Names, namely, ivenue.org, inetba.net, and inetba.org, be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.
Terrell C. Birch
Dated: December 18, 2000